In early January 2012, Electronic Arts (“EA”), creators of Battlefield 3 (“BF3”), filed a Complaint for Declaratory Relief in the Northern District of California against military helicopter manufacturer Textron. Textron is the owner and manufacturer of military helicopters that are depicted in BF3, including the UH-1Y, V-22 Osprey, and AH-1Z helicopters (the “Helicopters”). In late 2011, Textron notified EA in a cease and desist letter to remove any imagery of the Helicopters from BF3 because EA did not ask for permission or receive a license to use Textron’s trademarks or Helicopter’s trade dress in BF3. Assuming any argument under the First Amendment fails, for whatever reason, would EA’s use of Textron’s trademarks and depiction of the Helicopters violate any of Textron’s federal rights? First, the court will have to decide whether EA violated any rights involving any registered trademarks. Secondly, the court will have to decide whether EA has infringed on Textron’s trade dress rights.

A quick search shows that V-22, UH-1Y, and AH-1Z are all federal trademarks (Registration #’s 3063307, 2908650 and 2928806) owned by Textron (the “Trademarks”). Therefore, use of these Trademarks on a similar product which may cause consumer confusion may qualify as an infringement of Textron’s rights. In BF3, these Trademarks are used directly in connection with the Helicopter’s virtual depiction. Usually, Textron has the burden to show that there is consumer confusion and would do so by applying the factors for the likelihood of confusion (which varies throughout each federal circuit).

However, this is a complaint for declaratory relief. EA is asking the Court to affirm EA’s assertion that the use of the Trademarks in BF3 constitutes nominative fair use and, therefore, there is no need to go through infringement litigation. The doctrine of nominal fair use allows EA to use the Trademarks to identify the Helicopters without being subject to liability for infringement. Unfortunately, there is disagreement between the federal circuits on which standard to use when a party claims the doctrine of nominal fair use. Some circuits, including the Third-Circuit, believe that Textron would have to satisfy the factors for likelihood of confusion prior to going through a nominal fair use analysis. However, the Ninth Circuit, the circuit in which this case is being tried in, sees nominative fair use as a modification to the likelihood of confusion analysis of Textron’s infringement claim. Nominative fair use appears to be EA’s only counter regarding trademark liability because other methods of challenging Textron, including cancellation of the Trademarks, is not feasible. The Trademarks are now incontestable and do not satisfy any the requirements for cancellation under 15 USC §1064(3).

Applying the Ninth-Circuit’s version of the nominative fair use doctrine to the case at hand, the doctrine is met when three elements are satisfied: 1) The Helicopter in question must be one not readily identifiable without use of the Trademark; 2) Only so much of the Trademark may be used as is reasonably necessary to identify the Helicopter; and 3) EA must do nothing that would, in conjunction with the Trademark, suggest sponsorship or endorsement by Textron.

Using known facts, it appears that EA will satisfy these elements. It is difficult to readily identify the Helicopters without use of its associated Trademark; for example, EA could have described the V-22 Osprey as the “multi-mission tilt-rotor military aircraft,” but this descriptive designation could portray a multitude of aircrafts. Secondly, EA used the Trademarks as it is reasonably necessary to identify the Helicopter; use of a fanciful logo would not qualify as reasonable. Lastly, EA used the trademarks to accurately describe the Helicopters in BF3 and none of EA’s uses suggest that Textron affiliated itself with EA/BF3 or endorsed the sale of BF3. Although BF3’s starting sequence does not disclaim any sponsorship, endorsement or affiliation with Textron, EA has not done anything to affirmatively suggest Textron’s sponsorship or endorsement of BF3.

Using the V-22 as an example, it is difficult to argue that the V-22’s design, including the tilt rotors, the twin tail vertical stabilizer, multi-function cockpit displays, loading ramp, and patented ice management system, tilt-rotor wing fold mechanism, tilt-rotor’s drive system, and pylon conversion system are not functional; each design element allows it to perform to its desired specifications and improves the stability, pilots ergonomics, aerodynamics and performance of the Helicopter. Further, some design elements are patented, which provides strong evidence of functionality. Unless Textron can prove that the Helicopter’s design are purely aesthetic, it appears that Textron will have a difficult time proving that the Helicopters are entitled to trade dress protection.

This is not the first time these parties had this dispute. As stated above, it seems that Textron has a difficult road ahead to show any form of trademark infringement within BF3. However, this case highlights Textron’s desire of raising revenue through a trademark licensing business. A victory by Textron could stipulate two things; EA will stop using the Trademarks and Helicopters in BF3, or BF3 will have the Trademarks and Helicopters available at an additional cost incurred ultimately by the consumer. Such costs could be in the form of additional downloadable content featuring officially licensed products or a higher initial purchase price of future released games. The gaming industry would then hit a cross-road in which it must decide whether a game which utilizes real vehicles, brands or items is economically feasible and, if so, not cost prohibitive. Clearly the appeal to drive a Ferrari in game is greater than that of a made up vehicle, but whether consumers are willing to pay the additional expense for a brand is an important consideration for publishers prior to paying for the licenses.